Coach v. Asia Pacific Trading
Citation Coach, Inc. v. Asia Pac. Trading Co., Inc., 676 F.Supp.2d 914 (C.D. Cal. 2009) (full-text). Factual Background Plaintiffs Coach, Inc. and Coach Services, Inc. are in the business of manufacturing and marketing a variety of products, including handbags, watches, footwear, and eyewear. Defendant Sunglass Experts, Inc. is in the business of distributing eyewear, including sunglasses, at wholesale to retailers. The defendant does not sell any designer-branded eyewear, only eyewear made to look like designer eyewear. The defendant obtains many of its products overseas. Plaintiffs allege that in 2008 they discovered that Sunglass Experts was importing, promoting and selling sunglasses that allegedly bore exact reproductions of Coach’s “CC Design” mark. Trial Court Proceedings Plaintiffs filed a lawsuit in January of 2009 against defendants. The first amended complaint asserts claims for trademark infringement, false designation of origin and false descriptions, trademark dilution and common law unfair competition. In September 2009, plaintiffs filed a motion for summary adjudication regarding plaintiff’s trademark infringement claim against Defendant Sunglass Experts. Defendant Sunglass Experts then filed a motion for summary judgment regarding compensatory damages. Lastly, Defendants Mirage and David Hsu jointly filed a motion for summary judgment on no liability. All of these motions were opposed. Plaintiff’s motion for summary adjudication To succeed on a trademark infringement claim, a plaintiff must establish that (1) it has a valid, protectable trademark and (2) the defendant subsequently and without authorization used a similar mark likely to cause consumer confusion, deception, or mistake. In considering the second requirement, the Ninth Circuit has weighed the following eight factors: (1) the strength of the mark, (2) the proximity or relatedness of the goods, (3) the similarity of the marks, (4) evidence of actual confusion, (5) the marketing channels used, (6) the type of goods and the degree of care likely to be exercised by the purchaser, (7) the defendant’s intent in selecting the mark, and (8) the likelihood of expansion of product lines. The district court found that it could not say that Plaintiff has carried its burden of showing that there is no genuine issue of material fact with respect to whether Defendant’s “CG” products are confusingly similar to Plaintiff’s “CC Design” products. Therefore, the district court granted Plaintiff’s motion for summary adjudication on the issue of liability against Defendant Sunglass Experts with respect to Sunglass Expert’s “CC” products, but denies the motion with respect to Sunglass Expert’s “CG” products. Sunglass Expert’s motion for summary judgment on compensatory damages The district court found that Defendant has demonstrated that Plaintiffs are not entitled to recover any damages, whether profits, actual damages, or statutory damages, on their Lanham Act claims because there is no evidence that the Plaintiffs suffered any damages. Regarding Plaintiff’s request for compensatory damages, the district court found that as a matter of law, the compensatory damages are limited to $5,183.00 because Plaintiffs submitted no evidence of actual damages. Defendants' Mirage and David Hsu’s motion for summary judgment The district court found that Defendants Mirage and David Hsu were entitled to summary judgment of no liability because Plaintiffs have failed to submit any admissible evidence showing that Mirage or David Hsu ever engaged in any infringing activity. However, the district court denied the Defendants request for attorney’s fees because there is no evidence that in the course of making their arguments Plaintiffs misrepresented facts that they knew to be false. Category:Case Category:Case-U.S.-Federal Category:Case-U.S.-Trademark Category:Trademark Category:2009